The Full Federal Court has today upheld the decision of Gordon J
at first instance in Telstra v Phone Directories Company Pty
Ltd  FCAFC 149, finding that Telstra had failed to
establish that copyright subsists in the listings in the Yellow
Pages and White Pages telephone directories.
Telstra and Sensis alleged the publishers of 'Local
Directories' phone books distributed in Queensland, Northern
Territory and New South Wales had infringed copyright by
reproducing entries from the Yellow Pages and White Pages telephone
Tony Watson, a partner in of Middletons' Melbourne office,
who acted for Local Directories said "The decision has
potentially far-reaching implications. Works which are data
compilations are likely to be affected. A recent and relevant
example has been the attempt to stop third parties using
information from the My Schools website. Other examples include
real estate auction results, timetables, sporting fixtures and
sporting statistics, which take a lot of work and money to compile.
If such works are largely computer generated, with human authors
not contributing to the material form of the compilation, then it
is unlikely that copyright law in Australia will prevent the
information being copied. It now appears quite clear that
Australian courts will not protect such works no matter how much
labour and expense has gone into such compilations."
The decision suggests that the parliament may need to consider
enacting legislation that specifically protects databases, such as
exists in Europe. .
The Full Court held and that Telstra's claim failed as
Telstra was unable to identify who were the authors of the contents
of directories in question, and no "independent intellectual
effort" of a "sufficient effort of a literary
nature" of those who made a contribution was identified. The
judges agreed that the activities of Telstra employees in
collecting the relevant data for the directories (maintaining,
updating and editing the database of customer details) was
irrelevant to the question of subsistence of copyright. Such
activities were antecedent to the question of authorship.
Keane CJ's reasons emphasised that central to the copyright
protection afforded by the Copyright Act was the concept of
authorship by an individual or individuals. His Honour upheld the
principal contention of the respondents that "the directories
were compiled, not by the individuals engaged to facilitate the
process, but by a computerised process of storing, selecting,
ordering and arranging the data to produce the directories in the
form in which they were published".
The Full Court agreed with Justice Gordon's emphasis on the
relationship between authorship and originality in copyright law.
The fact that a computer program was largely responsible for
reducing the directories into material form was a key factor in
determining that the works could not be considered
"original" works or compilations in the sense
contemplated by the Copyright Act. There was no identifiable act of
The Court emphasised that "skill and labour" is only
relevant insofar as it shows that a work is "original" in
the sense of not being copied. Therefore, the activities of Telstra
employees in collecting the relevant data for the directories
(maintaining, updating and editing the database of customer
details) was "not relevant to assessing whether those who
reduced the directories to material form did so with sufficient
independent intellectual or literary effort". Any effort
involved in the collection and updating of data contained in the
directories was antecedent to the reduction of this data into
material form and those engaged in collecting and updating the
database could not be described as authors.
Justice Gordon's decision at first instance was handed down
in February 2010, which followed the decision of the High Court in
IceTV v Nine Network in April 2009. IceTV emphasised the
importance of analysing whether copyright subsists by reference to
the tests set out in the legislation, rather than trying to mould
the existing laws to protect something which was not a
"work" within the definition of the legislation.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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